DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
IDS filed 3/26/24 is acknowledged, the reference therein relating to the general background of applicant’s invention.
Claim Objections
Claim 5 is objected to because of the following informalities: the second line states “related the scanning function”, there should be a “to” between “related” and “the”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a display control unit” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Inspection of the specification reveals that a CPU (figure 2, item 201) corresponds to the display control unit.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1) Claim(s) 1-7, 9-12, 15 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. patent application publication 2021/0250452 by Mizutani.
2) Regarding claim 1, Mizutani teaches an image processing apparatus having a scanning function to scan image data of a document, the image processing apparatus comprising: a display control unit (figure 1, item 11; a CPU) configured to display a first setting in a predetermined setting area, the first setting being a setting for executing a first function to execute a function related to the scanning function (figure 6; paragraph 51; various scan setting selections are shown), the function including at least a function to automatically scan both sides of the document (paragraph 54; figure 6; both-sides reading can be selected, reading can be by an ADF as disclosed in paragraph 59), a function to delete blank data contained in the document (paragraph 53; figure 6; blank pages can be set to be removed), and a function to adjust orientation of the image data contained in the document (paragraph 72; figure 6; rotation angle can be set), wherein, in response to the predetermined setting area being selected, the display control unit displays a setting screen including a setting different from the first setting, the setting being for executing a function related to the scanning function (figure 6; any change in selection of any of the parameters shown would satisfy the limitation of “a setting different from the first setting”).
3) Regarding claim 2, Mizutani teaches the image processing apparatus according to Claim 1, wherein the setting screen is a screen that allows selecting the setting for executing the function related to the scanning function, the setting screen containing information on details of the first setting (figure 6, item 511; scan key executes the scanning).
4) Regarding claim 3, Mizutani teaches the image processing apparatus according to Claim 1, wherein the display control unit displays the first setting as a default in the predetermined setting area in response to the scanning function being selected on a screen that is displayed first when the image processing apparatus is activated (paragraph 56; first settings displayed can be defaults).
5) Regarding claim 4, Mizutani teaches the image processing apparatus according to Claim 1, wherein the display control unit displays the setting screen in which the first setting is enabled (paragraphs 73 and 74; first settings can be enabled while other settings are disabled).
6) Regarding claim 5, Mizutani teaches the image processing apparatus according to Claim 1, wherein the setting different from the first setting and related the scanning function comprises a second setting for a second function for scanning one side of the document and a third setting for a third function for scanning both sides of the document (figure 6; both-sides reading can be set to ON or OFF, any other difference in setting [e.g. document size] would be a different set of settings than the “first setting”).
7) Regarding claim 6, Mizutani teaches the image processing apparatus according to Claim 5, wherein, when at least one of the function to delete blank data contained in the document and the function to adjust the orientation of the image data contained in the document is unavailable, not the first setting but the second setting is displayed in the predetermined setting area (paragraph 72; figure 9; when both-sides is off [i.e. not first setting] the blank page deletion and rotation can also be turned off [i.e. “unavailable”]).
8) Regarding claim 7, Mizutani teaches the image processing apparatus according to Claim 6, wherein, when the second setting displayed in the predetermined setting area is selected, the setting screen displays the second setting and the third setting (figure 9; flatbed [i.e. a manual feed] can be selected thereby offering “second” and “third” settings in “both-side” reading ON or OFF).
9) Regarding claim 9, Mizutani teaches the image processing apparatus according to Claim 6, wherein a case where the function to delete blank data contained in the document is unavailable comprises a case where the function to delete blank data contained in the document is disabled (paragraphs 74 and 75; settings can be disabled and not displayed [e.g. figure 7]).
10) Regarding claim 10, Mizutani teaches the image processing apparatus according to Claim 6, wherein a case where the function to adjust the orientation of image data contained in the document is unavailable comprises a case where the function to adjust the orientation of the image data contained in the document is disabled (paragraphs 74 and 75; any setting not a part of a particular procedure can be disabled).
11) Regarding claim 11, Mizutani teaches the image processing apparatus according to Claim 6, wherein the second setting comprises a setting for enabling the second function and disabling the function to delete blank data contained in the document and the function to adjust the orientation of image data contained in the document (figure 6; both-side reading can be OFF [i.e. one side scanning ON] and removal of blank page can also be OFF).
12) Regarding claim 12, Mizutani the image processing apparatus according to Claim 6, wherein the third setting comprises a setting for enabling the third function and disabling the function to delete blank data contained in the document and the function to adjust the orientation of image data contained in the document (figure 6; both-side reading can be set to ON and rotation can be set to zero [i.e. OFF]).
13) Regarding claim 15, Mizutani teaches the image processing apparatus according to Claim 1, wherein a case where the function to automatically scan the both sides of the document is unavailable comprises a case where the image processing apparatus does not include an apparatus for executing the function to automatically scan the both sides of the document (paragraph 54; both-side scanning is not displayed if the device is incapable).
14) Regarding claim 18, Mizutani teaches the image processing apparatus according to Claim 1, further comprising a transmission function to transmit the image data of the document scanned using the scanning function to an external information processing apparatus based on a setting related to the scanning function selected on the setting screen (paragraph 85; figure 6; saving destination can be set).
15) Claims 19 and 20 are taught in the same manner as described in the rejection of claim 1 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
16) Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2021/0250452 by Mizutani as applied to claim 6 above, and further in view of U.S. patent application publication 2019/0141201 by Tonegawa.
Mizutani does not specifically teach the image processing apparatus according to Claim 6, wherein the third function includes a function to scan both sides of a document printed on the both sides such that, when the document is reversed in line symmetry about an upper edge or a lower edge of the document, a top and a bottom of the image data are the same on the both sides of the document and a function to scan the both sides of the document printed on the both sides such that, when the document is reversed in line symmetry about a right edge or a left edge of the document, the top and the bottom of the image data are the same on both sides of the document.
Tonegawa teaches the image processing apparatus according to Claim 6, wherein the third function includes a function to scan both sides of a document printed on the both sides such that, when the document is reversed in line symmetry about an upper edge or a lower edge of the document, a top and a bottom of the image data are the same on the both sides of the document and a function to scan the both sides of the document printed on the both sides such that, when the document is reversed in line symmetry about a right edge or a left edge of the document, the top and the bottom of the image data are the same on both sides of the document (paragraph 34; double sided scan can be selected opening up-down or left-right).
Mizutani and Tonegawa are combinable because they are both from the scan settings field of endeavor.
It would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed to combine Mizutani with Tonegawa to add up-down and left-right scan options. The motivation for doing so would have been to increase the utility of the scanner. Therefore it would have been obvious to combine Mizutani with Tonegawa to obtain the invention of claim 8.
17) Claims 13, 14, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2021/0250452 by Mizutani as applied to claim 6 above, and further in view of U.S. patent application publication 2017/0064102 by Fujii.
18) Regarding claim 13, Mizutani does not specifically teach the image processing apparatus according to Claim 1, wherein, when the function to automatically scan the both sides of the document is unavailable, the first setting is not displayed in the predetermined setting area, and a fourth setting for executing a fourth function to execute a function to scan image data of the document set on a platen glass of the image processing apparatus is displayed.
Fujii teaches the image processing apparatus according to Claim 1, wherein, when the function to automatically scan the both sides of the document is unavailable, the first setting is not displayed in the predetermined setting area, and a fourth setting for executing a fourth function to execute a function to scan image data of the document set on a platen glass of the image processing apparatus is displayed (figure 14; paragraph 77; when double sided scan is unavailable, first setting is grayed out and a function for single-sided scanning on platen [platen disclosed in paragraphs 47 and 48] is displayed).
Mizutani and Fujii are combinable because they are both from the scan settings field of endeavor.
It would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed to combine Mizutani with Fujii to add scanning on platen. The motivation for doing so would have been to set and read only a single page of a document. Therefore it would have been obvious to combine Mizutani with Fujii to obtain the invention of claim 13.
19) Regarding claim 14, Fujii (as combined with Mizutani in the rejection of claim 13 above) teaches the image processing apparatus according to Claim 13, wherein, when the fourth setting displayed in the predetermined setting area is selected, information indicating that the setting related to the scanning function is unchangeable (paragraph 77; figure 14; scanning functions are grayed out and un-selectable).
20) Regarding claim 16, Mizutani (as combined with Fujii in the rejection of claim 13 above) teaches the image processing apparatus according to Claim 1, wherein, in a case where the function to automatically scan the both sides of the document is unavailable and the function to delete blank data contained in the document and the function to adjust the orientation of the image data contained in the document are available, the display control unit displays a fifth setting in the predetermined setting area, the fifth setting being a setting for executing a fifth function to execute a function to scan image data of the document set on a platen glass (Fujii, paragraphs 47 and 48; platen can be utilized for single sided scanning) of the image processing apparatus, the function to delete blank data contained in the document, and the function to adjust orientation of the image data contained in the document (Mizutani, figure 9; scan can be set to both sided “NO” while blank data and rotations can be set to “ON”).
21) Regarding claim 17, Mizutani (as combined with Fujii in the rejection of claim 13 above) teaches the image processing apparatus according to Claim 16, wherein, when the fifth setting displayed in the predetermined setting area is selected, the display control unit displays the setting screen containing the fifth setting and a fourth setting for executing a fourth function to execute the function to scan the image data of the document set on the platen glass (Fujii, paragraphs 47 and 48; platen can be utilized for single sided scanning) of the image processing apparatus (Mizutani, figure 9; scan execution button is shown).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN O DULANEY whose telephone number is (571)272-2874. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abderrahim Merouan can be reached at (571)270-5254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BENJAMIN O. DULANEY
Primary Examiner
Art Unit 2676
/BENJAMIN O DULANEY/ Primary Examiner, Art Unit 2683
Prosecution Insights